WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

China Ocean Shipping (Group) Co. Ltd v. Cao Shan Hui

Case No. D2000-0066

 

1. The Parties

1.1 Complainant is China Ocean Shipping (Group) Co. Limited, a company organised under the laws of the Peopleís Republic of China, with its principal place of business at No. 6 East Changían Road, Beijing, Peopleís Republic of China.

1.2 The Respondent is Cao Shan Hui, of 81-602, 491 Gumei Road, Shanghai, SH 200233, Peopleís Republic of China.

 

2. The Domain Name and Registrar

2.1 The domain name at issue is <COSCO.COM>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

3.1 A Complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on February 15, 2000. The signed original, together with four copies, forwarded by courier under cover of a letter dated February 17, 2000, was received by WIPO Center on February 17, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on February 17, 2000.

3.2 On February 16, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI to:

- Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

- Confirm that the domain name at issue is registered with NSI.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain name at issue.

- Indicate the current status of the domain name.

3.3 By email dated February 17, 2000, NSI advised WIPO Center as follows:

- NSI had received a copy of the complaint from the Complainant.

- NSI is the Registrar of the domain name registration <COSCO.COM>.

- The Respondent, Cao Shan Hui, is the current registrant of the said domain name. He is also the technical and billing contact for the <COSCO.COM> domain name. Relevant information is as follows:

Name: Cao Shan Hui

Postal Address: 81-602, 491 Gumei Road
Shanghai, SH 200233
Peopleís Republic of China

Phone: (86-21) 6485 1867
Fax: (86-21) 6495 7191

E-mail: shanhui@bigfoot.com

Administrative Contact for the domain name:

Name: Genyuan, Gong Gen
Fax: (86-576) 366 1463

E-mail: ziggy@email.com

- NSIís 5.0 Service Agreement is in effect.

- The domain name registration <COSCO.COM> is in "Active" status.

3.4 NSIís Service Agreement 5.0 with the Respondent explicitly informs the Respondent "that this Agreement explains our obligations to you, and your obligations to us in relation to use of our services". It further provides:

"8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site:

http://www.networksolutions.com/legal/dispute-policy.html."

3.5 The Service Agreement also states, in pertinent part, that NSIís domain name dispute policy may be modified:

"9. DOMAIN NAME DISPUTE POLICY MODIFICATIONS. You agree that we, in our sole discretion, may modify our dispute policy. We will post any such revised policy on our Web site at least thirty (30) calendar days before it becomes effective. You agree that, by maintaining the reservation or registration of your domain name after modifications to the dispute policy becomes effective, you have agreed to these modifications. You acknowledge that if you do not agree to any such modification, you may terminate this AgreementÖ."

3.6 The Service Agreement also provided:

"10. DOMAIN NAME DISPUTES. You agree that, if your use of our domain name registration services is challenged by a third party, you will be subject to the provisions specified in our dispute policy in effect at the time of the dispute. You agree that in the event a domain name dispute arises with any third party, you will indemnify and hold us harmless pursuant to the terms and conditions set forth below in this Agreement. If we are notified that a complaint has been filed with a judicial or administrative body regarding your use of our domain name registration services, you agree not to make any changes to your domain name record without our prior approval. We may not allow you to make changes to such domain name record until (i) we are directed to do so by the judicial or administrative body, or (ii) we receive notification by you and the other party contesting your registration and use of our domain name registration services that the dispute has been settled. Furthermore, you agree that if you are subject to litigation regarding your registration and use of our domain name registration services, we may deposit control of your domain name record into the registry of the judicial body by supplying a party with a registrar certificate from us."

3.7 With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

3.8 Having verified that the complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on February 21, 2000 attempted to transmit by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the complaint was also emailed to NSI and ICANN. The communication to the Respondent by email was recorded as successful, but the communication by facsimile was not. A second attempt by facsimile on February 24, 2000 was successful. The courier delivery was effected on March 1, 2000.

3.9 The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by March 11, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

3.10 On February 25, 2000, the Respondent advised WIPO Center by email that his "fax machine does not always work smoothly. For further contact please send the message by email or postal mail". The Respondent has made no other response to the Complaint. On March 14, 2000, WIPO Center notified the Respondent by email and post of the consequences of his default in failing to file a Response

3.11 The Complainant elected to have its complaint resolved by a 3-member Panel: it has duly paid the amount required of it to WIPO Center.

3.12 On March 17, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It invited Mr Yong Li of the China International Economic and Trade Arbitration Commission, Beijing, Peopleís Republic of China, and Ms Young Kim of Kim & Chang, Seoul, Republic of Korea, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.

3.13 The Panelists advised their acceptance and forwarded to WIPO Center their statements of impartiality and independence. On March 17, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

3.14 On March 17, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 30, 2000.

3.15 The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

3.16 The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. FACTUAL BACKGROUND

4.1 The Complainant has provided evidence of the registration of the service mark COSCO in the jurisdictions and in connection with the registered services as shown in the following table:

Reg. No.

Service Mark

Jurisdiction

Class

Date and Term of Reg.

Services

1141915

COSCO

China

39

7/1/98;

10 years

Transport; transport brokers; transport of travellers; boat transport; boat rental; packaging of goods; storage of goods; courier services (messages or merchandise); tour services; submarine rental services.

02287 of 1999

COSCO

The Hong Kong Special Administrative Region, China

39

18/11/96;

7 years

Transport reservation services; transport brokerage; transport of travellers; ship transport; rental of boat; railway transport; storage of goods; delivery of goods.

2,210,351

COSCO

USA

39

15/12/98;

10 years

Freight transportation by ship, air, truck; passenger transportation by ship, air, truck; warehouse storage.

4.2 The Respondent is not a licensee of the Complainant, nor is he otherwise authorised to use the Complainantís mark.

4.3 According to the WHOIS information supplied by the Complainant, the <COSCO.COM> domain name record was created on November 27, 1999.

4.4 The Complainant has searched the Internet for the address www.COSCO.COM. The address was unable to resolve into a valid IP address.

4.5 On February 14, 2000, a representative of the Complainant sent an email enquiry to the Respondent at the email address shown above. He asked what price (if any) the Respondent sought to transfer the domain name at issue to the Complainant.

4.6 On February 15, 2000, the Respondent replied via email offering to sell the domain name at issue to the Complainant for US$9,000 Ė a sum in excess of the Respondentís out-of-pocket expenses directly related to the domain name. He said that he and a friend, Gong Gen Yuan, had bought the name from an American "at USD5000 last year". He further stated "There are several entities contacted us but we always request they are from COSCO".

 

5. PARTIESí CONTENTIONS

5.1 The Complainant submits that the domain name at issue has been registered and used by the Respondent in bad faith for the following reasons:

a. The Respondent has sought to sell the domain name to the Complainant for a large figure.

b. That fact, plus the fact that the address www.COSCO.COM is non-existent, indicate that the Respondent has registered or acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant as owner of the COSCO mark for a valuable consideration in excess of the out-of-pocket costs directly related to the domain name.

5.2 The Respondent has made no submission.

 

6. DISCUSSION AND FINDINGS

6.1 Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

6.2 The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

- That the Respondent has no legitimate interests in respect of the domain name.

- The domain name has been registered and used in bad faith.

6.3 The Panel determines that the domain name <COSCO.COM> is identical or confusingly similar to the Complainantís service mark, COSCO.

6.4 The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:

a.The Respondent has failed to submit any evidence that it has any right or legitimate interest in respect of the domain name at issue.

b. According to the Complainantís search, there is no valid IP address in connection with the domain name.

6.5 The domain name must not only be registered in bad faith, but must also be used in bad faith. In determining whether it has been so used, the Panel adopts with respect the reasoning set out by the learned Panelist, Mr M Scott Donahey, in World Wrestling Federation Entertainment Inc. v Michael Busman, Case No. D 99-001. That was a case where the Respondentís domain name, registered in Australia, was identical to a service mark and trademark of the Complainant registered in the United States. The Respondent there had offered to sell the domain name to the Complainant "for valuable consideration in excess of out-of-pocket expenses". That reasoning was adopted by Sir Ian Barker QC as sole Panelist in Harrods Ltd v Boyd, Case No. D2000-0060.

6.6 The learned Panelist in the World Wrestling case pointed out that it was clear from the legislative history that ICANN intended proof of use in bad faith as well as of registration before the streamlined procedure could be invoked. Paragraph 4(b)(i) of the ICANN policy document states:

"the following circumstances Ö shall be evidence of the registration and use of the domain name in bad faith Ö Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of the documented out-of-pocket costs directly relating to the domain name."

6.7 The panel determines that the Respondent has registered and is using the domain name in bad faith. There is evidence of a direct attempt by the Respondent to sell the domain name to the 2000 states:

"There were several entities contacted us, but we always request they prove themselves they are from COSCO".Complainant. Specifically, the Respondentís email response to the Complainant of February 15,

This statement indicates that the Respondent has no intention of using the domain name for his own business and that his primary intention is to sell the domain name registration to the true owner, the Complainant.

 

7. DECISION

7.1 For the foregoing reasons, the Panel decides:

a. that the domain name registered by the Respondent is identical or confusingly similar to the service mark to which the Complainant has rights;

b. that the Respondent has no rights or legitimate interests in respect of the domain name; and

c. the Respondentís domain name has been registered and is being used in bad faith.

7.2 Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <COSCO.COM> be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Mr Yong Li Ms Young Kim
Panelists

Date: March 28, 2000